What is a trade mark?
A trade mark is a symbol or sign used by a trader to distinguish his or her product or service from those of other traders. A trade mark can be a brand name, a house mark, a company logo, a trading style or a 'getup'.

What trade marks can be registered?
To be registrable, a trade mark must consist of or include a distinctive word or words, letters, numerals, a device, a logo or a combination of these. It may also be a sound, a smell, or a slogan. Even certain shapes of packaging can now qualify for registration. St. Michael and the Bass Red Triangle are good examples of trade marks, as are the Coca Cola bottle and the Direct Line red telephone.

How is UK trade mark registration obtained?
It is not essential to be using a mark in the UK in order to register it. However, there must be a real intention to use it at the date of application. An application to register a trade mark is filed at the Trade Marks Registry. The Trade Marks Registry then examines the trade mark application to establish that it meets the various criteria for registration and to ensure that it does not conflict with any earlier applications or registrations filed by others.

This process can be complex and a trade mark attorney can assist in ensuring that the application is filed correctly in the first instance to provide proper protection for the trade mark and can deal with any objections raised by the Trade Marks Registry. Once any objections are overcome, the application will be published in the Official Trade Marks Journal. If no objections are made to the registration by any party within three months, a Registration Certificate will be issued.The registration will last for ten years and is renewable for further ten year periods.

Can trade marks be used and registered abroad?
Virtually every country in the world has a trade mark registration system and we can arrange for an application to be filed anywhere. In addition, it is possible to file a single application covering all countries of the European Union. There is also an international system whereby a qualifying trade mark owner can file one application to seek protection for a mark in a range of countries.

How is a trade mark registration enforced?
In general, a trade mark registration is enforced by bringing legal proceedings in a court of law. If successful, such proceedings can be used to secure injunctions to prevent infringement and obtain an award of damages in respect of past infringement. In cases of counterfeiting, it is also possible to use criminal law to have infringing goods seized through regulatory authorities such as Customs, the Trading Standards Office and the Police.

Why should trade marks be registered?
Registration provides a legal recognition of an owner's exclusive right in a trade mark. It can provide the legal right to prevent others from using or registering the same or a confusingly similar mark for the same or similar (and sometimes dissimilar) products or services for which the mark is registered. It can also assist in preventing the use of a conflicting domain name on the Internet. If a mark is not registered, rights to the mark can only be acquired through actual use. Such 'common-law' rights may not guarantee the right to prevent a competitor from registering and even enforcing a conflicting mark.

In some circumstances, a user of a trade mark which is not registered may be prevented from continuing to use that mark if another company registers the same or a similar mark. Furthermore, unregistered common law rights can only be enforced if the mark enjoys a sufficient reputation for confusion to be likely and even then, the enforcement process can be much more expensive and difficult.

Why are trade marks important commercially?
Trade marks are valuable commercial assets which exclusively identify the manufacturer or source of a product or service. Branding goods or services with a trade mark helps to enhance the reputation of the product or service and its producer or supplier. Trade marks can often be more important than the 'quality' of the product or service in determining a consumer's choice. Indeed, there have been cases where one company has made a take-over bid for another multi-million pound company simply to acquire its trade marks.

What about other people's registrations?
There are few things more embarrassing and potentially costly than having a marketing campaign stopped in its tracks or having to withdraw a product from the market. This can happen if a trade mark is adopted without doing the appropriate clearance searches first and is subsequently found to contravene rights owned by another company. Therefore, before adopting a trade mark it is important to check that another organisation does not already own rights in the mark. To achieve this, searches can be made of existing trade mark applications and registrations not only in the United Kingdom, but also throughout the world.

Why do you need help from a Trade Mark Attorney?
Trade mark attorneys spend many years training to advise on the availability of marks for use and registration, and on the best way to protect trade marks. Like most areas of law, trade mark law is complex and trade mark attorneys are specialists who can guide you through the legal maze to ensure that your trade marks are properly protected and that you avoid infringing the rights of others.

Trade mark attorneys can deal with the whole registration process for you, look after the renewal of registrations and advise on the management and maintenance of a trade mark portfolio. They can also advise and assist you in licensing and enforcing your trade mark registrations when necessary.

What can Boult Wade Tennant offer?
Boult Wade Tennant has a substantial trade mark practice in the UK and has offices in London, Reading, Oxford and Cambridge.

Our trade mark attorneys arrange for the filing of applications, the registration and renewal of marks, and provide sound commercial advice in relation to all aspects of trade mark creation, use, registration and enforcement. This includes protection of domain names and trade marks on the Internet. They also advise in the case of trade mark conflicts and provide guidance in relation to the enforcement of trade mark rights both at home and abroad.

Our in-house Search Department enables our attorneys to provide efficient search services and to advise on the availability of trade marks for use and registration. In addition, our Renewals Department handles renewal payments in-house and enables us to provide regular reports on the status of trade mark portfolios.